EXHIBIT 1027:
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`Lifescan’s Reply Markman Brief (Doc. 257).
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`
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`Pharmatech Solutions, Inc.: EXHIBIT 1027
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
`
`

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`Case5:11-cv-04494-EJD Document257 Filed03/28/13 Page1 of 18
`
`Gregory L. Diskant (admitted pro hac vice)
`Eugene M. Gelernter (admitted pro hac vice)
`Charles Hoffmann (admitted pro hac vice)
`Sean Marshall (admitted pro hac vice)
`PATTERSON BELKNAP WEBB & TYLER LLP
`1133 Avenue of the Americas
`New York, NY 10036
`Telephone: (212) 336-2000
`Facsimile: (212) 336-2222
`E-mail: gldiskant@pbwt.com
`emgelernter@pbwt.com
`choffmann@pbwt.com
`smarshall@pbwt.com
`
`Richard Goetz (S.B. #115666)
`O'MELVENY & MYERS LLP
`400 South Hope Street
`Los Angeles, CA 90071-2899
`Telephone: (213) 430-6000
`Facsimile: (213) 430-6407
`E-Mail: rgoetz@omm.com
`
`Susan Roeder (S.B. #160897)
`O'MELVENY & MYERS LLP
`2765 Sand Hill Road
`Menlo Park, CA 94025
`Telephone: (650) 473-2600
`Facsimile: (650) 473-2601
`E-Mail: sroeder@omm.com
`
`Attorneys for Plaintiffs LIFESCAN, INC.
`and LIFESCAN SCOTLAND, LTD.
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE
`
`LIFESCAN, INC. and
`LIFESCAN SCOTLAND, LTD.,
`
`Case No. CV11-04494-EJD (PSG)
`
`Plaintiffs,
`
`LIFESCAN'S REPLY CLAIM
`CONSTRUCTION BRIEF
`
`v.
`
`SHASTA TECHNOLOGIES, LLC, DECISION
`DIAGNOSTICS CORP., PHARMATECH
`SOLUTIONS, INC., and CONDUCTIVE
`TECHNOLOGIES, INC.,
`
`Defendants.
`
`Date:
`Time:
`Place:
`Judge:
`
`April 16, 2013
`2:00 p.m.
`5th Floor, Courtroom 4
`Hon. Edward J. Davila
`
`LIFESCAN'S REPLY MARKMAN BRIEF
`CASE NO. CV11-04494-EJD (PSG)
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`Pharmatech Solutions, Inc: 1027-1
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
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`Case5:11-cv-04494-EJD Document257 Filed03/28/13 Page2 of 18
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`TABLE OF CONTENTS
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`Page
`
`TABLE OF AUTHORITIES ................................................................................................................ ii
`
`I.
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`II.
`
`Introduction................................................................................................................................1
`
`The Court Correctly Addressed the Construction of “Proportion(al)” In Its
`Preliminary Injunction Decision ................................................................................................3
`
`III.
`
`LifeScan’s Construction is Consistent with the Intrinsic Evidence...........................................4
`
`A.
`
`B.
`
`C.
`
`D.
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`E.
`
`F.
`
`LifeScan’s Construction is Consistent with Prior Art Patents That Are Part of
`the Intrinsic Evidence ....................................................................................................4
`
`LifeScan’s Construction Gives Consistent Meaning to the Patent’s Use of the
`Term “Proportion(al)”....................................................................................................7
`
`Defendants’ Construction Treats the Patent and Prior Art as Nonsensical ...................8
`
`Defendants’ Construction Improperly Excludes the Preferred Embodiment ................8
`
`The Prosecution History Does Not Support Defendants’ Construction ......................10
`
`The Claim Differentiation Doctrine Is Inapplicable ....................................................11
`
`IV.
`
`Defendants’ Position Contradicts Their Description of Their Own Accused Device .............12
`
`V.
`
`Only LifeScan’s Construction Would Preserve the Patent’s Validity .....................................13
`
`VI.
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`Conclusion ...............................................................................................................................14
`
`i
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`LIFESCAN'S REPLY MARKMAN BRIEF
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`CASE NO. CV11-04494-EJD (PSG)
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`Pharmatech Solutions, Inc: 1027-2
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
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`Case5:11-cv-04494-EJD Document257 Filed03/28/13 Page3 of 18
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`TABLE OF AUTHORITIES
`
`Page
`
`CASES
`
`Adams Respiratory Therapeutics, Inc. v. Perrigo Co.,
`616 F.3d 1283 (Fed. Cir. 2010)....................................................................................................8, 9
`
`AIA Eng’g Ltd. v. Mattogeaux Int’l S/A,
`657 F.3d 1264 (Fed. Cir. 2011)....................................................................................................1, 8
`
`Arthur A. Collins, Inc. v. Northern Telecom, Ltd.,
`216 F.3d 1042 (Fed. Cir. 2000)........................................................................................................4
`
`Becton, Dickinson & Co. v. Tyco Healthcare Corp.,
`616 F.3d 1249 (Fed. Cir. 2010)..............................................................................................1, 8, 13
`
`Curtis-Wright Flow Control Corp. v. Velan, Inc.,
`438 F.3d 1374 (Fed. Cir. 2006)......................................................................................................11
`
`CVI/Beta Ventures, Inc. v. Tura LP,
`112 F.3d 1146 (Fed. Cir. 1997)....................................................................................................1, 7
`
`Inverness Med. Switzerland GmbH v. Princeton Biomeditech Corp.,
`309 F.3d 1365 (Fed. Cir. 2002)........................................................................................................7
`
`Jang v. Boston Scientific Corp.,
`532 F.3d 1330 (Fed. Cir. 2008)................................................................................................11, 13
`
`Kumar v. Ovonic Battery Co.,
`351 F.3d 1364 (Fed. Cir. 2003)....................................................................................................4, 5
`
`Lava Trading, Inc. v. Sonic Trading Mgt., LLC,
`445 F.3d 1348 (Fed. Cir. 2006)................................................................................................11, 13
`
`Phillips v.AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc)..................................................................................5, 13
`
`Powell v. Home Depot U.S.A., Inc.,
`663 F.3d 1221 (Fed. Cir. 2011)....................................................................................................4, 5
`
`Rexnord Corp. v. Laitram Corp.,
`274 F.3d 1336 (Fed. Cir. 2001)....................................................................................................1, 7
`
`V- Formation, Inc. v. Benetton Group SpA,
`401 F.3d 1307 (Fed. Cir. 2005)........................................................................................................4
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)......................................................................................................8, 9
`
`ii
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`LIFESCAN'S REPLY MARKMAN BRIEF
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`Pharmatech Solutions, Inc: 1027-3
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
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`

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`Case5:11-cv-04494-EJD Document257 Filed03/28/13 Page4 of 18
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`STATUTES
`
`35 U.S.C. § 101....................................................................................................................................13
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`35 U.S.C. § 112(a) ...............................................................................................................................13
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`iii
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`LIFESCAN'S REPLY MARKMAN BRIEF
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`CASE NO. CV11-04494-EJD (PSG)
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`Pharmatech Solutions, Inc: 1027-4
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
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`Case5:11-cv-04494-EJD Document257 Filed03/28/13 Page5 of 18
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`I.
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`Introduction
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`Plaintiffs LifeScan, Inc. and LifeScan Scotland, Ltd. (collectively "LifeScan") submit
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`this reply brief on the construction of the only disputed claim term in LifeScan's U.S. Patent Nos.
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`7,250,105 (the "'105 patent") – “proportion(al).”1 This Court should adopt LifeScan’s construction
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`of “proportion(al)” as meaning “correlated (to)” and should reject Defendants’ proposed
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`construction as meaning “in a fixed ratio.”
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`The parties agree that claim 1 of the ‘105 patent uses the term “proportion(al)” in
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`referring to both: (1) two working sensor parts “for generating charge carriers in proportion to the
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`concentration of said substance [glucose] in the sample liquid,” and (2) “measuring an electric
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`current at each working sensor part proportional to the concentration of said substance [glucose] in
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`the sample liquid.” Consistent with case law, the parties also agree that the term “proportion(al)”
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`has a consistent meaning in both contexts. See Rexnord Corp. v. Laitram Corp., 274 F.3d 1336,
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`1342 (Fed. Cir. 2001) (“[A] claim term should be construed consistently with its appearance in other
`
`places in the same claim ….”); CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1159 (Fed. Cir.
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`1997) (“[W]e are obliged to construe the term ‘elasticity’ consistently throughout the claims.”).
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`However, the parties disagree on what that consistent construction should be.
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`Under LifeScan’s construction, both uses of “proportion(al)” in claim 1 are consistent
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`with the term’s usage in the patent and in the prior art. That is not true of Defendants’ construction.
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`Defendants’ construction would reduce the second use of “proportion(al),” in the patent and in the
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`prior art, to incorrect nonsense. Under Defendants’ construction, “no known device/method” could
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`possibly yield a proportional measurement; in fact, Defendants concede that when “proportion(al)”
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`is given their construction the patent and the prior art describe “incorrect science.” (D.E. 203 at 33;
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`D.E. 206 (Wang Decl.) ¶¶ 27-28). As LifeScan has demonstrated (D.E. 240 at 12), a construction
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`that treats the patent and the prior art as nonsensical “cannot be correct.” Becton, Dickinson & Co. v.
`
`Tyco Healthcare Corp., 616 F.3d 1249, 1255 (Fed. Cir. 2010); see also AIA Eng’g Ltd. v.
`
`1 In view of the recent decision staying claims relating to U.S. Patent Nos. 5,708,247 and 6,241,862
`pending reexamination (D.E. 245), this reply brief does not address the construction of terms in
`those patents.
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`LIFESCAN'S REPLY MARKMAN BRIEF
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`OF U.S. PATENT NUMBER 7,250,105
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`Case5:11-cv-04494-EJD Document257 Filed03/28/13 Page6 of 18
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`Mattogeaux Int’l S/A, 657 F.3d 1264, 1276 (Fed. Cir. 2011) (“We strive, where possible, to avoid
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`nonsensical results in construing claim language.”).
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`Defendants’ construction not only is at odds with the use of “proportion(al)” in the
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`patent and in the prior art – it also is at odds with their own use of “proportion(al)” in the
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`Instructions for Use that Defendants place in every GenStrip package. See D.E. 246 at 16-17.
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`LifeScan submits that the patent, the prior art, and the Instructions for Use that
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`Defendants distribute with clearance from the FDA, do not use “incorrect science.” What is
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`incorrect is Defendants’ claim construction.
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`LifeScan’s construction is consistent with the usage of the term “proportion(al)” by
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`persons of skill in this art, as shown by prior art references that are part of the intrinsic record. Even
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`Defendants recognize that LifeScan’s construction describes the “old and well-known relationship”
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`that governs electrochemical glucose measuring devices. D.E. 249 at 14. In the recent hearing on
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`LifeScan’s motion for a preliminary injunction, Defendants’ counsel conceded that the word
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`“relational” – which is synonymous with LifeScan’s construction of “correlated (to)” – fairly
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`describes this known relationship because “there’s a relationship between the current measure and
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`the blood ….” D.E. 252 (PI Hearing Tr.) at 37.
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`Defendants’ own arguments show that their proposed claim construction of
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`proportion(al), as meaning “in a fixed ratio,” is wrong.
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`x Defendants admit that the term proportion(al), as used in the intrinsic record, is
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`not limited to the meaning of “fixed ratio” and is used in the art “in conjunction
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`with the measurement of current.” D.E. 249 at 4.
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`x Defendants admit that the Ikeda patent, which is cited in the specification of the
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`‘105 patent and thus is part of the intrinsic record, uses “proportion(al)” the same
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`way as LifeScan’s proposed construction. Id. at 12.
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`x
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`Indeed, Defendants provide a translation of a related Japanese patent application
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`which shows that this use of proportional in the U.S. patent – reviewed and
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`approved by the PTO – is synonymous with “depended upon.” Id. at 12-13.
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`2
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`OF U.S. PATENT NUMBER 7,250,105
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`Case5:11-cv-04494-EJD Document257 Filed03/28/13 Page7 of 18
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`x Defendants likewise admit that in the Hill patent, which is cited in the ‘105
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`patent’s prosecution history, “’proportional’ is used in a manner in which there is
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`no fixed ratio.” Id. at 12.
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`x Defendants admit that a construction that excludes the all of a patent’s
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`embodiments is disfavored (id. at 13), and that the construction they advocate
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`would make the embodiments in the patent unworkable because under their
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`construction “no known device/method can” possible provide a proportional
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`measurement of glucose. D.E. 203 at 33; D.E. 206 (Wang Decl.) ¶¶ 27-28.
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`II.
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`The Court Correctly Addressed the Construction of “Proportion(al)” In Its
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`Preliminary Injunction Decision
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`This Court already has considered and ruled, on a preliminary basis, on the only claim
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`construction issue that now remains in this case.
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`In its decision on LifeScan’s motion for a preliminary injunction, the Court carefully
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`analyzed the parties’ competing claim constructions for “proportion(al),” and rejected Defendants’
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`construction. See D.E. 246 at 15-17. As the Court correctly recognized, by Defendants’ admission,
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`the ‘105 patent would “use[ ] science that is ‘simply incorrect’” if their construction were accepted.
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`Id. at 15-16. Moreover, under Defendants’ construction, the supposed error on the science would
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`extend beyond the ‘105 patent. As this Court correctly recognized, under Defendants’ construction
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`“not only Plaintiffs’ patent, but also other art references, … employ[ ] ‘incorrect science.’” Id. at 16.
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`The Court also recognized that Defendants’ construction is inconsistent with their own use of the
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`term “proportion(al)” in their statements to the FDA and in the Instructions for Use that Defendants
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`distribute to the public with the FDA’s clearance. Id.
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`Based on this evidence, this Court concluded – correctly – that Defendants’ proposed
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`construction of “proportion(al)” is “contorted and divorced from the art, and even contrary to
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`Defendants’ own usage of the term.” Id. at 17. As the Court stated, Defendants’ claim construction
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`argument falls short of “generat[ing] a ‘substantial question’ as to infringement.” Id. at 16-17.
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`3
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`LIFESCAN'S REPLY MARKMAN BRIEF
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`CASE NO. CV11-04494-EJD (PSG)
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`Pharmatech Solutions, Inc: 1027-7
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
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`Defendants now attack the Court’s determinations as “predicated on [a]
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`misunderstanding,” D.E. 249 at 2, but the only “misunderstanding” is the Defendants’
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`mischaracterizations of the intrinsic evidence.
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`III.
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`LifeScan’s Construction is Consistent with the Intrinsic Evidence
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`LifeScan’s construction is the only construction that is consistent with the intrinsic
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`evidence
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`A.
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`LifeScan’s Construction is Consistent with Prior Art Patents That Are
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`Part of the Intrinsic Evidence
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`“‘[P]rior art cited in a patent or cited in the prosecution history of the patent
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`constitutes intrinsic evidence.’” Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231 (Fed. Cir.
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`2011) (citation omitted). Such prior art provides relevant evidence of the “usage [of a term] in the
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`prior art.” Kumar v. Ovonic Battery Co., 351 F.3d 1364, 1368 (Fed. Cir. 2003). “‘[W]hen prior art
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`that sheds light on the meaning of a term is cited by the patentee, it can have particular value as a
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`guide to the proper construction of the term, because it may indicate not only the meaning of the
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`term to persons skilled in the art, but also that the patentee intended to adopt that meaning.’” Id.
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`(quoting Arthur A. Collins, Inc. v. Northern Telecom, Ltd., 216 F.3d 1042, 1045 (Fed. Cir. 2000); see
`
`also V-Formation, Inc. v. Benetton Group SpA, 401 F.3d 1307, 1311 (Fed. Cir. 2005) (same).
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`These principles are applicable here. As discussed in LifeScan’s initial brief (D.E.
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`240 at 8-10), the section of the ‘105 specification that discusses the background of the invention uses
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`the term “proportional” in discussing “known glucose measuring devices ….” Col. 1:25-38. It then
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`cites prior art U.S. Patent No. 5,582,697 (Ikeda), which uses the term “proportional” in the same
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`sense as LifeScan’s claim construction in explaining that “[t]he obtained current value is in
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`proportion to the concentration of the substrate in the liquid sample.” D.E. 241-2 (Marshall Decl.),
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`Ex. B (Ikeda ‘697) at col. 8:9-19 (emphasis added).2 The use of “proportion(al)” in the Ikeda ‘697
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`patent – and the specification’s reference to that patent as an example of “known glucose measuring
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`devices” – is intrinsic evidence demonstrating the understanding and usage of “proportional” by
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`2 Another Ikeda patent (U.S. Pat. No. 5,650,062), which also is part of the intrinsic record, is to the
`same effect. D.E. 241-3 (Marshall Decl.), Ex. C at col. 8:11-13.
`4
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`Case5:11-cv-04494-EJD Document257 Filed03/28/13 Page9 of 18
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`persons of skill in the art. Powell, 663 F.3d at 1231. The specification’s citation of that patent
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`supports the conclusion that the inventors “intended to adopt that [same] meaning” in their patent,
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`Kumar, 351 F.3d at 1368, and thus supports LifeScan’s construction. Id.
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`Defendants do not dispute that the Ikeda ‘697 patent uses “proportion(al)” in the same
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`sense as LifeScan’s claim construction. Instead, Defendants point out that the Ikeda patent “also
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`refer[s] to measured glucose as ‘depending upon’ glucose constructions. – e.g. ‘a current value
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`depending upon the concentration of glucose in the sample liquid was obtained.’” D.E. 249 at 12
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`(quoting the Ikeda ‘697 patent) (emphasis added by Defendants). But Ikeda’s use of the phrase
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`“depending upon,” in describing the proportional relationship between the measured current and the
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`concentration of glucose, supports LifeScan’s position, not Defendants’ position. As Defendants
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`argument makes clear, the patent uses the terms “proportional” and “depending upon” (another way
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`of saying “correlated”) as synonyms. The passages Defendants cite are further evidence that persons
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`of skill in the art used did not use the term “proportion(al)” to describe a “fixed ratio.”
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`Defendants also offer their own translation of a Japanese patent application to Ikeda,
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`which they describe as related to the Ikeda ‘697 patent because it is a “related, prior filing in Japan.”
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`D.E. 249 at 12-13; see also D.E. 250-10 (Shaeffer Decl., Ex. G). That translation – and the Japanese
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`patent application itself – are not mentioned in the specification or prosecution history of the ‘105
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`patent, and thus are not part of the intrinsic record. They are extrinsic evidence and, as such, have
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`less utility in claim construction. Phillips v.AWH Corp., 415 F.3d 1303, 1317-18 (Fed. Cir. 2005)
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`(en banc). In fact, the translation that Defendants offer supports LifeScan’s position, not
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`Defendants’ position. Where U.S. Patent No. 5,582,697 (Ikeda) uses the term “proportional,”
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`Defendants’ translation of the prior Japanese filing uses the words “depended upon,” which, once
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`again, is another way of saying “correlated.” Notably, Defendants’ translation does not use the
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`phrase “fixed ratio,” or a synonym for that phrase. Defendants assert that the version of Ikeda ‘697
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`issued by the PTO and relied upon by the drafters of LifeScan’s patent in describing the prior art
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`thus includes an “abnormal use of ‘proportion.’” D.E. 249 at 13. In fact, both the context and the
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`5
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`LIFESCAN'S REPLY MARKMAN BRIEF
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`CASE NO. CV11-04494-EJD (PSG)
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`Pharmatech Solutions, Inc: 1027-9
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`OF U.S. PATENT NUMBER 7,250,105
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`Case5:11-cv-04494-EJD Document257 Filed03/28/13 Page10 of 18
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`translation provided by Defendants prove the opposite: in this art, proportion(al) and correlate(d)
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`(or “depended upon”) are synonyms.
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`U.S. Pat. No. 5,820,551 (Hill), which is cited in the prosecution history, provides
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`further intrinsic evidence of the usage of “proportion(al)” by persons skilled in the art and again
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`supports LifeScan’s construction. Hill uses “proportion(al)” in the same sense as LifeScan’s
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`construction, as meaning a linear response that can be correlated with glucose concentration, even
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`though not by a fixed ratio. See D.E. 240 at 9; D.E. 241-4 (Marshall Decl), Ex. D at col. 8:56-57.
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`Defendants concede this, acknowledging that it is clear in context that Hill uses “‘proportional’ … in
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`a manner in which there is no fixed ratio ….” D.E. 249 at 12.
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`Faced with this evidence, Defendants have to – and do – concede that prior art patents
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`in the intrinsic record – cited and relied upon by the inventors in reciting the principles behind
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`glucose measuring devices – use “proportion(al)” in the same sense as LifeScan’s construction and
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`in a different sense from Defendants’ construction. See D.E. 249 at 4 (“On occasion, ‘proportional’
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`is used in conjunction with measurement of current ….”).
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`Other prior art references that Defendants cite (D.E. 249 at 10-11) provide further
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`support for LifeScan’s construction. For example, Defendants point out that three references
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`(Pritchard, Kim and Allen) describe the “correlat[ion]” between measured current and the
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`concentration of glucose in a sample. Id. They also note that two other references (Toshlhlko and
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`Horri) describe the current value as “correspond[ing] to” the glucose concentration. Id. None of this
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`supports Defendants’ construction. Rather, these references show that persons of skill in the art use
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`terms like “correlated” and “corresponding to” as synonyms to “proportion(al),” to describe the
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`known relationship between measured current and the concentration of glucose in the sample. Other
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`prior art patents in the intrinsic record – e.g., U.S. Patent No. 5,582,697 (Ikeda), U.S. Pat. No.
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`5,820,551 (Hill) – use the term “proportion(al)” to describe the same relationship, and the ‘105
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`patent uses the term “proportion(al)” the same way. Persons of skill in the art use these synonyms to
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`describe the same relationship – and not to mean the “fixed ratio” that would be required by
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`Defendants’ construction.
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`Case5:11-cv-04494-EJD Document257 Filed03/28/13 Page11 of 18
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`Indeed, Defendants have premised their own arguments to this Court on a recognition
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`that persons of skill in the art would understand the term “proportion(al)” as meaning “correlated
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`(to).” Thus, Defendants’ obviousness defense – which was addressed in 13 pages of Defendants’
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`opposition to LifeScan’s preliminary injunction (D.E. 203 at 21-33), and 16 pages of the supporting
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`Declaration by their expert Dr. Wang (D.E. 206 at 6-21) – is premised on a recognition by
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`Defendants and their expert that persons of skill in the art would understand “proportion(al)” in this
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`sense. The Court took note of this in its preliminary injunction decision, when it stated that
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`“Defendants themselves appear to rely on this understanding of proportionality when convenient.”
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`D.E. 249 at 16. “For instance, in their first obviousness argument, Defendants explain to the court
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`that the Winarta ‘229 patent uses proportionality in the same way as Plaintiffs’ ‘105 patent.” Id.
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`Defendants should not be heard to take a different position here.
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`B.
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`LifeScan’s Construction Gives Consistent Meaning to the Patent’s Use of
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`the Term “Proportion(al)”
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`All parties agree that it is preferable for “proportion(al)” to have a consistent meaning
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`in claim 1. See Inverness Med. Switzerland GmbH v. Princeton Biomeditech Corp., 309 F.3d 1365,
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`1371 (Fed. Cir. 2002); Rexnord, 274 F.3d at 1342 (“a claim term should be construed consistently
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`with its appearance in other places in the same claim ….”); CVI/Beta, 112 F.3d at 1159.
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`Defendants pretend – incorrectly – that LifeScan uses inconsistent meanings for
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`“proportional.” Thus, Defendants tell the Court that “the parties do not dispute” that claim 1’s first
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`use of “proportion(al),” in discussing generation of charge carriers, means in “a fixed ratio.” D.E.
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`249 at 3; see also id. at 5 (discussing the “undisputed meaning of ‘proportional’”); see also id. at 8,
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`9. This is simply incorrect. The patent uses the term “proportion(al)” consistently, as meaning
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`“correlated (to).”
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`Under LifeScan’s construction, the term “proportion(al)” has a consistent meaning
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`throughout the patent and throughout claim 1, as meaning “correlated (to).” Even if charge carriers
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`are generated in a fixed ratio to glucose concentration as Defendants contend, then the charge
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`carriers would still be “correlated” to the glucose concentration, as the claim requires. The
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`Case5:11-cv-04494-EJD Document257 Filed03/28/13 Page12 of 18
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`consistent meaning advocated by LifeScan is broad enough to encompass both relations that are in
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`“fixed ratios” (see, e.g. D.E. 249 at 10 ) and, as Defendants admit, relationships that are not in a
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`fixed ratio (see e.g., D.E. 249 at 12-13 (discussing U.S. Pat. Nos. 5,820,551 (Hill), 5,582,697
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`(Ikeda), and 5,650,062 (Ikeda)). LifeScan’s consistent reading of the term “proportion(al)” results in
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`a patent that makes sense and is operable. Defendants “consistent” reading makes no sense and
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`renders the patent inoperable.
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`C.
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`Defendants’ Construction Treats the Patent and Prior Art as Nonsensical
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`In opposing LifeScan’s preliminary injunction motion, Defendants and their expert
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`vigorously argued that “no known device/method” could possibly yield a “proportional”
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`measurement of glucose when the term “proportion(al)” is given their construction. (D.E. 203 at 33;
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`D.E. 206 (Wang Decl.) ¶¶ 27-28). That assertion was the basis for Defendants’ utility and
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`enablement defenses. D.E. 203 at 33.
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`As LifeScan has demonstrated (D.E. 240 at 12), a construction that treats the patent
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`and the prior art as inoperative and nonsensical is heavily disfavored. See AIA, 657 F.3d at 1276;
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`Becton Dickinson, 616 F.3d at 1255. Defendants essentially have no answer to this point. They do
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`not disavow their earlier assertions that their construction would render the patent and the prior art
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`inoperative and nonsensical. A construction that yields that absurd result cannot be correct.
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`D.
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`Defendants’ Construction Improperly Excludes the Preferred Embodiment
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`Defendants concede that a construction that excludes the preferred embodiment is
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`“disfavored.” D.E. 249 at 13. Such a construction “is rarely, if ever correct ….” Adams Respiratory
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`Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010) (quoting Vitronics Corp. v.
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`Conceptronic, Inc., 90 F.3d 1576, 1583-84 (Fed. Cir. 1996)).
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`Defendants’ construction has this fatal defect. In their preliminary injunction papers,
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`Defendants conceded that under their construction it would be impossible for any device (which
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`would obviously include the preferred embodiment) to “measur[e] an electric current at each
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`working sensor part [in a fixed ratio] to the concentration of [glucose] in the sample liquid.”
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`According to Defendants, any description of a device as measuring current proportional to the
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`Case5:11-cv-04494-EJD Document257 Filed03/28/13 Page13 of 18
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`concentration of glucose (under Defendants’ construction) would employ “incorrect science.” D.E.
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`203 at 33; D.E. 206 (Wang Decl.) ¶¶ 27-28.
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`Defendants now try to distance themselves from their earlier arguments by offering a
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`convoluted argument that their construction somehow would not exclude the preferred embodiment.
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`D.E. 249 at 13-14. As best it can be understood, their current theory is that the preferred
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`embodiment might be a magical device that somehow defies known science by accomplishing what
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`Defendants’ expert has described as scientifically impossible, i.e., “measuring an electric current at
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`each working sensor part [in a fixed ratio] to the concentration of [glucose] in the sample liquid.”
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`D.E. 206 (Wang Decl.) ¶¶ 27-28.
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`This newly minted theory is not supported by anything in the ‘105 patent or anywhere
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`else. Nothing in the patent remotely suggests that the preferred embodiment has this capability. The
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`specification does not tout the innovation as demonstrating, for the first time and contrary to the
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`tenets of known science, a way to measure electric current that is in a fixed ratio to the concentration
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`of glucose in the sample liquid. To the contrary, the specification only uses the term
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`“proportion(al)” in the section that provides background information on features of “[k]nown
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`glucose measuring devices” that existed in the prior art. See col. 1:25-54. Nothing about the
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`invention claims novelty in its use of the proportional relationship between measured current and
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`glucose concentration.
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`The specification supports only one conclusion – that the preferred embodiment
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`“measures an electric current at each working sensor part proportional to the concentration of
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`[glucose] in the sample liquid” in the same sense as the prior art references that are described in the
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`specification, i.e., by measuring an electric current that can be correlated to the amount of glucose.
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`A construction like Defendants’ construction – which would exclude the preferred embodiment – is
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`heavily disfavored and not likely to be correct. Adams Respiratory, 616 F.3d at 1290; Vitronics, 90
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`F.3d at 1583-84.
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`CASE NO. CV11-04494-EJD (PSG)
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`Pharmatech Solutions, Inc: 1027-13
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`OF U.S. PATENT NUMBER 7,250,105
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`E.
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`The Prosecution History Does Not Support Defendants’ Construction
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`According to Defendants, the file history somehow shows that the reason for
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`allowance of the ‘105 patent was its disclosure of a previously unknown – and according to
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`Defendants’ expert, scientifically impossible – way of measuring electric current in a “fixed ratio” to
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`the amount of glucose in a liquid sample. See D.E. 249 at 14-15. This is pure fantasy. The file
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`history shows nothing of the sort.
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`If this was the point of novelty of the ‘105 patent over the prior art, as Defendants
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`argue, then one would expect to find some statement by the inventors, in the specification or in the
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`prosecution history, touting this supposed innovation as novel and as an improvement over the prior
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`art. No such statement exists.
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`Defendants’ position on this point begins, and pretty much ends, by selectively citing
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`a truncated portion of the examiner’s statement of reasons for allowance. The relevant passage
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`begins as follows (with th